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Tuesday, 13 October 2015

What are Industrial Designs?

Introduction

Today I had the opportunity to meet with a young lady who wanted to ask me about industrial design. She had painstakingly created lovely designs by hand, works that would take hours hunched over her handiwork. I can't tell you what it was, but the final work was lovely. It was a modification of an existing product, modified so that it shone and gleamed like a diamond. To this end, she thought of commercializing it and asked me whether it could be registered as an industrial design.

Our modern-day consumer lives in a society where almost all industrially produced items have gone through some form of design. The design begins with the design of the solution, where designers normally take apart user experiences to generate enough design cues that would make a "delightful" product that addresses a "pain point" of the consumer. Then there is the question of aesthetics, the kind of design that makes things look unique and pleasing, never mind the fact that they perform the same function as other competing items in their category.

Here is an example of an industrial design:

This is from Australian application no. 199103270 (registration no. AU116029S). Thanks to IP Australia for the searchable database.

Definition

This is the definition of "industrial design" in the context of Malaysian law:

features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged by the eye, but does not include:-

(a) a method or principle of construction; or
(b) features of shape or configuration of an article which:-

(i) are dictated solely by the function which the article has to perform; or
(ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

That definition comes from section 3 of the Industrial Designs Act 1996.

The most important ingredient of the definition appears to be that it must be applied by an "industrial process or means". That immediately rules out any handiwork, no matter how beautiful it may be. An "industrial process" seems to imply some machines being involved in the production of the article.

The second important element of the definition is that it must be related to "shape, configuration, pattern or ornament" which "appeal to and are judged by the eye". This means that the shape, configuration, pattern or ornament is meant to be pleasing to the eye. In short, it is design, by designers, for industrial production, understood in the proper sense of "industrial design".

Exclusions

The definition also excludes certain things.

The first exclusion is simple enough. A "method or principle of construction" is by necessity, excluded. If it is the only method by which an article can be produced, how can it be considered an industrial design? A more proper way of protecting that method of construction may be by patent. Section 13(2) of the Patents Act 1983 says, "An invention may be or may relate to a product or a process".

The second exclusion is a feature of shape or configuration of an article which is "dictated solely by the function which the article has to perform". That means that the article should not be shaped based solely on its intended function.

The third is a feature of shape or configuration of an article which depends on the shape of another article, and the article is intended to be a part of that other article.

This point was recently considered in the Kuala Lumpur High Court case of Veresdale Ltd v Doerwyn Ltd [2015] 7 MLJ 836. Four automobile parts had been registered under the Malaysian Industrial Designs Act: a hood, a front bumper, a rear bumper, and a grille. The parties agreed that the parts are "integral parts of the automobile" and the parts have "an impact on the general shape and appearance of the whole automobile". Based on the exclusion stated above, the Plaintiff sought to declare that the four automobile parts are not industrial designs within the meaning of section 3(1) Industrial Designs Act 1996.

The learned judge referred to another case: Ford Motor Company Limited and another, re [1993] RPC 399. A similarly worded provision, section 1(1)(b)(ii) of the English Copyright Designs and Patents Act 1988, was being considered. The judge, calling it the "must match" provision, decided that a certain door panel was intended to match a car. Since the door panel was meant to be part of a completed car, the court (in the English case) decided that the door panel could not fall within the definition of an "industrial design". The recent Malaysian case of Veresdale v Doerwyn was similarly decided.

Singaporean Exclusion

The Singaporean definition of an industrial design, simply called a "design", is quite similar to the Malaysian definition. However, an additional exclusion is found in the Singaporean definition, i.e. "features of shape or configuration of an article which ... enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function".

(Please refer to section 2 of the Registered Designs Act, from Singapore).

The Singaporean definition means that those elements of design that enable a product to be connected to another article may be excluded from registration as a design under the Registered Designs Act. But there is no such exclusion here in Malaysia. Perhaps some Singaporean designers, eyeing the larger market in Malaysia, might consider registering their designs in Malaysia, especially those that fall within the last exclusion under the Singaporean Registered Designs Act.

According to the WIPO (World Intellectual Property Organization) website, the following are also excluded from industrial design protection:

designs that do not meet the requirements of novelty, originality and/or individual character;

designs incorporating protected official symbols or emblems (such as the national flag);

designs which are considered to be contrary to public order or morality.

Conclusion

This is just a simple article about industrial designs. I hope that I can revise this article in the future to include some examples of good industrial designs.

Interestingly, I read the following from the WIPO article I referred to earlier in this article:

Some countries exclude handicrafts from design protection, as industrial design law in these countries requires that the product to which an industrial design is applied is “an article of manufacture” or that it can be replicated by “industrial means”.

That implies that since only "some countries" exclude, there are also "some countries" which do not exclude? I'd be very interested to find out which countries do not exclude handicrafts from industrial design protection!